Nike of Samothrace (ca. 190 BC), in the Louvre.
Nike, the Greek goddess, symbolizes victory.
Nike, Inc., which started in 1964 as Blue Ribbon Sports, plays on the triumphalist theme. And this week it won a fight not by conventional means but by fleeing the field of battle.
Nike had sued a rival shoe-making outfit, Already, on the ground that the latter's footwear (Soulja Boys and Sugars) infringed and diluted Nike's trademark for its Air Force 1, a "hoops shoe" that Nike unveiled in 1982. But Nike tired of the fight and issued a "Covenant Not to Sue" Already for selling the Soulja Boys and Sugars as well as any "colorable imitations" of them. And it moved to dismiss Already's counterclaim for a judgment declaring the Air Force 1 trademark invalid.
The district court granted the motion. The Second Circuit affirmed. And so did the Supreme Court, unanimously.
The Court held that the Covenant met Nike's "'formidable burden of showing that it is absolutely clear the allegedly wrongful behavior could not reasonably be expected to recur.'" Already, Inc. v. Nike, Inc., No. 11-982, slip op. 4 (U.S. Jan. 9, 2013) (quoting Friends of the Earth, Inc. v. Laidlaw Environmental Services (TOC), Inc., 528 U.S. 167, 190 (2000)). Because of the Covenant, the Court ruled, Nike could not sue Already for infringing the Air Force 1 trademark — unless Already planned to make a total knock-off of the Air Force 1 shoe, something it gave no sign of intending. As Chief Justice Roberts wrote:
If such a shoe exists, the parties have not pointed to it, there is no evidence Already has dreamt of it, and we cannot conceive of it. It sits, as far as we can tell, on a shelf between Dorothy's ruby slippers and Perseus's winged sandals.